Chongqing Qiulong Technology Co Ltd v AE-BIKES Pty Ltd

[2024] ATMO 81

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Chongqing Qiulong Technology Co Ltd to registration of trade mark application number 2099540 (class 12) - Sur-Ron Australia Light Bee L1e - in the name of AE-BIKES PTY LTD

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Hall & Wilcox

Applicant: Self-represented

Decision:

2024 ATMO 81

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 44, 58, 58A, 60 and 62A – earlier registered trade mark deceptively similar and in respect of similar goods – s 44(4) not established – s 44 ground of opposition established – trade mark refused.

Background

1. On 29 June 2020 (‘Relevant Date’) an application for the trade mark detailed below was filed under the Trade Marks Act 1995 (Cth)[1] in the name of AE-BIKES PTY LTD (‘Applicant’)[2]:

   Trade mark: Sur-Ron Australia Light Bee L1e (‘Trade Mark’)

   Goods: Class 12: Motorbikes; Motorcycles; Electrically powered motor vehicles; Electric vehicles; Electrically powered vehicles; Vehicles utilising electric motors; Two-wheeled vehicles; Motor land vehicles for road use (‘Applicant’s Goods’)

   Endorsement: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

   [1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).

   [2] I note that some evidence refers to an entity named ‘A e-bikes Pty Ltd’, which I consider this refer to the same entity as the Applicant given the same Australian company number has been supplied for both entities.

2. The Trade Mark was examined under s 31 and a ground of rejection was raised under s 44. The acceptance of the Trade Mark was advertised on 2 November 2021.

3. On 22 December 2021, Chongqing Qiulong Technology Co Ltd (‘Opponent’) filed a Notice of Intention to Oppose. On 24 January 2022, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). On 9 April 2022 the Applicant filed its Notice of Intention to Defend.

4. On 14 July 2022, the Opponent filed its Evidence in Support (‘EIS’) consisting of a declaration of Dengyuan Sun, legal counsel of the Opponent, dated 14 July 2022, with Exhibits DS-1 to DS-31 (‘Sun-1’).

5. On 18 October 2022, the Applicant filed its Evidence in Answer (‘EIA’) consisting of a declaration of Adam Brennan, director of the Applicant and a director of Westsec Pty Ltd (‘Westsec’), dated 18 October 2022, with Exhibits AB-1 to AB-19 (‘Brennan’).

6. On 20 December 2022, the Opponent filed its Evidence in Reply (‘EIR’) consisting of a declaration of Dengyuan Sun, dated 15 December 2022 with Exhibits DS-1 and DS-2 (‘Sun-2’).

7. Both parties requested to be heard by way of written submissions. On 18 January 2024, the Opponent filed its written submissions. On 25 January 2024, the Applicant filed its written submissions. I am to decide the matter as a delegate of the Registrar of Trade Marks based on the abovementioned materials.

Onus and Grounds

1. The SGP nominated grounds of opposition under ss 42(b), 44, 58, 58A, 60, 62 and 62A. In its written submissions, the Opponent pressed grounds of opposition under ss 42(b), 44, 58, 58A, 60 and 62A. I consider the s 62 ground of opposition abandoned.

2. The Opponent has the onus to prove one ground of opposition[3] and the standard of proof is that of the balance of probabilities.[4]

Evidence

[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[4] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

EIS

1. The Opponent was incorporated in the People’s Republic of China on or about 10 August 2016.[5] Sun-1 states that the ‘Opponent has been using the Sur Ron Mark internationally since at least on or around 8 August 2015, when the Opponent registered the domain name “sur-ron.com”’.[6] The Opponent uses various trade marks containing the words ‘sur ron’, ‘light bee’ and ‘L1e’ sometimes separately and combination. Sun-1 declares that the Opponent has used the trade mark ‘Sur-Ron Light Bee L1e’ in Europe in relation to electric bikes. The Opponent’s goods are exported with its trade marks on packaging into Europe, the United States and Australia. The Opponent is said to authorise selling agents, distributors and dealers to sell its electric bikes and use its trade marks in the Australian market.

   [5] Sun-1, [3.1].

   [6] Sun-1, [6.1].

2. The Opponent owns Australian registered trade marks 2036429[7] which has the following details:

   Trade mark number: 2036429

   Trade mark: SUR RON (‘SUR RON’)

   Priority date: 11 September 2019

   Goods: class 12: Electric vehicles; Electrically operated vehicles; Electrically powered land vehicles; Electrically powered vehicles; Vehicles utilising electric motors; Motorbikes; Two-wheeled vehicles

   [7] I note that ‘CHONGQING QIU LONG’ appears on the Register as the owner of registered trade mark 2036429. Whether this refers to the Opponent or another person it establishes that the owner is a person other than the Applicant.

3. The Applicant was incorporated on 15 January 2018 and has had past dealings with the Opponent. In particular, the Applicant, ‘was an authorised dealer of the Opponent for the Light Bee Products in Australia’.[8] The ‘Light Bee Products’ are electric bikes. An authorisation letter dated 19 December 2017 issued by the Opponent appointed the Applicant as an authorised dealer for the ‘LIGHT BEE electric bike’ made by the Opponent.

   [8] Sun-1, [5.2].

4. It is not clear how the Applicant could have been appointed the distributor in 2017 if it was not incorporated until 2018. Regardless, after the incorporation of the Applicant, it appears to have become an authorised dealer for the Opponent’s electric bikes. Extracts of the Applicant’s website summarise the parties’ history as starting in 2017 when it ‘came across the [the Opponent] and its first model the Light Bee’.[9]

   [9] Sun-1, Exhibit DS-13.

5. Sun-1 states that, ‘[i]n or around November 2017, [Westsec] purchased seven units of the Light Bee Product. These Light Bee Products were imported into Australia and shipped to [Westsec] by the Opponent on or around 17 November 2017’.[10] Westsec has the same registered address as the Applicant and Mr Adam Brennan is also a director and shareholder of Westsec and the Applicant.

   [10] Sun-1, [5.4].

6. Exhibit DS-7 to Sun-1 includes bills of lading showing shipment of electric bikes and spare parts with the brand marking SUR-RON from the Opponent’s sales agent to the Applicant occurring in August, October and December 2018. I note some bills of lading concern Auckland, New Zealand as a destination and do not mention a relevant trade mark. At Exhibit DS-16 to Sun-1 are invoices and bills of lading showing shipments by the Opponent to the Applicant of electric bikes, including a product called the ‘Light Bee’.

7. Sun-1 also shows numerous examples of use of other trade marks appearing on invoices or social media which I need not summarise here.

EIA

1. Brennan contains various factual assertions about the history of the Applicant’s activities without corroborating evidence. There are also various statements made about the relationship between the Applicant and the Opponent.

2. In December 2017, the Opponent formally appointed Westsec as its authorised dealer for Australia and New Zealand. Brennan states that the directors of Westsec then agreed to set up a separate entity dedicated solely to electric vehicles. On the same day the authorisation was changed to the Applicant’s name. Brennan adds that ‘in approximately late 2018, Volt Motor Pty Ltd ACN 628 241 298 is appointed an Authorised Distributor for Australia …’.[11]

   [11] Brennan, [3.9].

3. The application for SUR RON was originally in the name of Volt Motor Pty Ltd (‘Volt Motor’) and was later assigned to the Opponent.

4. Exhibit AB-2 to Brennan is an Authorisation Letter dated 21 May 2020 (‘Authorisation Letter’) that the Opponent provided the Applicant. This refers to the Applicant as ‘SUR-RON AUSTRALIA’ as a shorthand. The Authorisation Letter confirms authorisation of the Applicant to use the intellectual property of the Opponent in the following terms:

   As part of our authorization, we have given [the Applicant] (Sur-Ron Australia) permission to use our Intellectual Property, including but not limited to: images, photography, logos, and wording (in the form of sur-ron, sur ron, surron, and any form of variation), to promote and use our brand in any of their marketing including but not limited to: website and social media pages, Facebook and Instagram.

5. The Authorisation Letter also confirms that Volt Motor is not authorised to apply for the trade mark ‘SUR RON’.

6. Exhibit AB-1 to Brennan is an email dated 5 June 2020 from the Applicant to the Opponent (‘June Email’) in which Mr Brennan objects to Volt Motor making an application for SUR RON. In the June Email, Mr Brennan also suggests the possibility that the Applicant might ‘trademark the name SUR RON here, with the permission and trust of [the Opponent], to challenge Volt’s hold on the word SUR RON.’

7. Brennan states that:

   the brake hoses fitted to the bikes in China are rejected for Australian Design Rules (ADRs) ... To address this issue, the Applicant undertook the work in Australia to modify the bikes and instal (sic) compliant brake hoses to meet safety requirements of the ADRs.[12]

   [12] Brennan, [4.9].

8. On 19 June 2019, the Applicant received ‘Identification Plate Approval by the Administrator of Vehicle Standards’.[13] This appears to reference a compliance plate which was applied by the Applicant on products that the Applicant had acquired from the Opponent and which were modified by the Applicant by replacing the brake hose. It is apparently a statutory requirement for vehicles to bear a compliance plate. The compliance plate bears the Applicant’s name and the Trade Mark and is shown at Exhibit AB-9 to Brennan. Brennan states that from 19 June 2019, the Applicant affixed these compliance plates to electric bikes. I extract an image of a compliance plate below:

[13] Brennan, [4.9].

1. By July 2021 it appears that that relationship between the parties ended and the Opponent had appointed another distributor.[14]

   [14] Brennan, Exhibit AB-7.

2. For completeness, I note Brennan states that, ‘[e]vidence previously submitted to IP Australia in the adverse examination report … and in the further adverse examination report … will not be resubmitted. However, this evidence will be referred to by me as necessary in this declaration’.[15] Brennan and the Applicant’s submissions reference evidence which may have been filed during the examination of the Trade Mark.[16] This evidence should have been filed as part of the EIA if the Applicant wished to rely on it. The Applicant was put on notice of this in the correspondence dated 18 July 2022 it received from this office which stated, ‘If you wish to rely on any evidence filed in the course of examination, you must also file it as part of your evidence in answer’ (my emphasis added). The Applicant has consciously chosen not to file this examination evidence as part of its EIA and the Opponent has not had an opportunity to view the material. Thus, to give such material any consideration would be procedurally unfair and improper.

   [15] Brennan, [1.6].

   [16] Applicant’s submissions, [1.6] and [2.4]. See also, Brennan, [3.4], [4.2], [4.6], [4.7]-[4.9], [4.13], [4.14]-[4.15], [4.18] and [4.21].

EIR

1. Sun-2 concerns ‘Road Vehicle Type Approval’ which apparently must be obtained before a person supplies the Light Bee. Sun-2 also discusses the feedback and suggestions received by the Opponent, including from the Applicant regarding the Opponent’s electric bikes. Sun-2 further adds that, ‘[t]he Applicant has, with the approval and knowledge of the Opponent, made various modifications to the Light Bee Product to adapt the Light Bee Product for the Australian market’.[17] Sun-2 also seeks to answer the receipt of a vehicle identification plate by the Applicant. I need not further summarise the EIR.

Consideration

[17] Sun-2, [4.1].

Section 44

1. Section 44 relevantly provides:

   44  Identical etc. trade marks

   (1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a) the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i) a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1: For deceptively similar see section 10.

   Note 2: For similar goods see subsection 14(1).

   Note 3: For priority date see section 12.

   …

   (4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

   (a) beginning before the priority date for the registration of the other trade mark in respect of:

   (i) the similar goods or closely related services; or

   (ii) the similar services or closely related goods; and

   (b) ending on the priority date for the registration of the applicant’s trade mark;

   the Registrar may not reject the application because of the existence of the other trade mark.

1. To establish the s 44 ground of opposition the Opponent must identify at least one trade mark which satisfies the following requirements:

1. it is in the name of a person other than the Applicant;

2. it has a priority date which is earlier than the Relevant Date;

3. it is substantially identical with, or deceptively similar to, the Trade Mark; and

4. it is in respect of goods and/or services which are either similar and/or closely related to the Applicant’s Goods.

1. The Opponent relies in part on SUR RON for its s 44 ground of opposition. As SUR RON is in the name of the Opponent, it is in the name of a person other than the Applicant. SUR RON has a priority date of 11 September 2019, which is earlier than the Relevant Date.

2. Plainly the Applicant’s Goods and the SUR RON goods each contain unqualified claims for ‘electric vehicles’ & ‘two-wheeled vehicles’ which notionally render all the relevant goods similar.

3. I should next compare the trade marks. I note that s 10 provides that a trade mark is deceptively similar ‘to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’. I must compare the respective trade marks as wholes,[18] with regard to essential or distinguishing features,[19] and consider them visually and aurally, and in the context of the relevant surrounding circumstances.[20] Also of importance is the effect and meaning of the trade marks,[21] especially their effect or impression produced on the mind of ordinary consumers.[22] I should account for imperfect recollection of those ordinary consumers and the addition of even a single word can, in the right circumstances, relevantly differentiate one remembered mark from another in the minds of those consumers.[23] Descriptive matter present in trade marks should be discounted, though not disregarded. Ultimately, what is required is a real tangible danger of confusion.[24] That is, ‘a real likelihood that some people will wonder or be left in doubt about whether the two sets of products … come from the same source’.[25]

   [18] Torpedoes Sportswear Pty Limited v Thorpedo Enterprises Pty Limited [2003] FCA 901, [78] (Bennett J).

   [19] Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited [2004] FCAFC 196, [77]-[88] (Moore, Sackville and Emmett JJ).

   [20] New South Wales Dairy Corporation v Murray Goulburn Co-operative Co Ltd (1989) 86 ALR 549, 589 (Gummow J).

   [21] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [51] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

   [22] Ibid [51] and [67], citing Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

   [23] Jockey International Inc v Darren Wilkinson [2010] ATMO 22 (Hearing Officer Spence).

   [24] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’); Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50](i) (French J) (‘Woolworths’); Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12, [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

   [25] Woolworths ibid [50](ii); Southern Cross ibid 594-595. See also, Australian Woollen Mills (n 22) 658.

4. The leading element of the Trade Mark and the only element of the SUR RON mark are the words ‘SUR RON’. I note that SUR RON appears to have no meaning in relation to the goods in question. The descriptive word ‘Australia’ and the words ‘Light Bee’ and ‘L1e’ present in the Trade Mark do not significantly alter the imperfect recollection of the ordinary consumer, who would likely recall the trade mark by the leading words ‘SUR RON’. It is likely that an ordinary consumer would be caused to wonder about whether the trade marks have the same trade source. I consider there to be a real tangible danger of confusion. Accordingly, the Trade Mark is deceptively similar to SUR RON.

Prior continuous use

1. The Applicant relies on s 44(4) as an answer to any deceptively similar trade mark in relation to similar goods. Pursuant to s 44(4) I may not reject the Trade Mark if I am satisfied that the Applicant has continuously used the Trade Mark in respect of the Applicant’s Goods for a period beginning before the priority date of SUR RON, being 11 September 2019, and ending on the Relevant Date. Where s 44(4) is relied upon it is the Applicant who must establish its applicability.

2. In these proceedings the Applicant has not provided any corroborating evidence of its use of the Trade Mark occurring before 11 September 2019. The evidence reflects that the Applicant, and Westsec, acted as the distributor for the Opponent’s electric bikes and parts in Australia. The Authorisation Letter appears to confirm the Opponent’s control over the Applicant’s use of the Opponent’s intellectual property as at 19 December 2017. It is the Applicant who proffers this evidence. The Authorisation Letter confirms the authorisation has been for the Applicant’s use of ‘wording (in the form of sur-ron, sur ron, surron, and any form of variation)’ for marketing. The Applicant’s conduct as shown in the evidence, including as shown in the June Email also indicates the Opponent’s control. I am not satisfied that any use of the trade marks on which the Applicant relies amounts the Applicant’s own use. I also note that none of the evidence dated before September 2019 demonstrates use of a trade mark containing the word ‘L1e’. The word ‘L1e’ has no meaning in relation to the Applicant’s Goods and I consider its presence significant. Accordingly, none of the evidence of use of trade marks dated before September 2019 shows use of the Trade Mark with additions or alterations which do not substantially affect its identity. The remaining EIA is otherwise either undated, concerns use of trade marks after 11 September 2019, or is insufficient to show the continuous use of a relevant trade mark.

3. Accordingly, I am not satisfied that s 44(4) is applicable. For completeness, I am also not satisfied that ss 44(3)(a) or 44(3)(b) are applicable based on the evidence filed.

4. Accordingly, the s 44 ground of opposition is established.

Decision

1. Section 55 relevantly provides:

   55  Decision

   (1)  Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

   (a)  to refuse to register the trade mark; or

   (b)  to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

1. The Opponent has established the ground of opposition under s 44. I refuse to register trade mark 2099540.

Costs

1. The Opponent has sought costs, which generally follow the event. I award costs against the Applicant in accordance with schedule 8 to the Regulations.

Benjamin Goldsworthy

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

30 April 2024